As Vietnam is a contracting party of the Madrid system comprising the Madrid Agreement concerning the International Registration of Marks (entry into on June 25, 1939) and the Protocol Relating to the Madrid Agreement (entry into on April 11, 2006), therefore, a trademark registration may be obtained by filing an international registration of mark designating Vietnam, among other designated countries, through the International Bureau of World Intellectual Property Organization (WIPO). There are more than 5,000 international applications designating Vietnam including subsequent designation ones, making up about 15% of total applications filed annually in Vietnam. Where a mark internationally filed under the Madrid system is rejected by Vietnam (i.e. the Vietnam National Office of Intellectual Property (“NOIP”), there are a considerable difference in term of procedure for response or appeal to a NOIP’s refusal (provisional refusal).
Deadline for Responding/Appealing
Different from a NOIP’s rejection (also known as Office Action) in case of a nationally filed trademark where applicant has 2 opportunities to appeal against such refusal, i.e., a response to 1st refusal raised by Trademark Department No. 1 or No. 2 under NOIP is allowed within 2 months (with only one 2-month extension of time is accepted), and an appeal lodged within 3 months against 2nd refusal issued by General Director of NOIP, if the response against 1st refusal is either failed or ignored by the applicant, is accepted, in case of refusal of the Madrid system-based mark, applicant has only one and non-extendable chance for response or petition against a NOIP’s so-called provisional refusal in a period of 3 months counting from the date on which WIPO has sent such refusal to holder of international registration of mark.
Due to taking some time to deliver via post, from our own experience, due date for submitting a response or appeal with NOIP is the date following approximately 3 weeks computed from the date shown on the NOIP’s provision refusal. Accordingly, please refer to WIPO’s Notification of Provisional Refusal to exactly determine the deadline for responding.
Understanding of Refusal Reasons Cited by NOIP
Like a refusal applicable for a nationally filed trademark, no internationally filed mark is granted protection where such mark falls into either absolute refusal grounds (Section 73 of the IP Law) or relative refusal grounds (Section 74 of the IP Law)
Absolute refusal ground is any of the followings:
- Signs identical with or confusingly similar to national flags or national emblems.
- Signs identical with or confusingly similar to emblems, flags, armorial bearings, abbreviated names or full names of Vietnamese State bodies, political organizations, socio-political organizations, sociopolitico-professional organizations, social organizations or socio-professional organizations or with international organizations, unless permitted by such bodies or organizations.
- Signs identical with or confusingly similar to real names, aliases, pseudonyms or images of leaders, national heroes or famous personalities of Vietnam or foreign countries.
- Signs identical with or confusingly similar to certification seals, check seals or warranty seals of international organizations which require that their signs must not be used, unless such seals are registered as certification marks by such organizations.
- Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
Relative refusal ground may be applied if the mark subject to a provisional refusal is under any of the below listed:
- Signs identicaSimple shapes and geometric figures, numerals, letters or scripts of uncommon languages, except where such sign has been widely used and recognized as a mark;
- Conventional signs or symbols, pictures or common names in any language of goods or services that have been widely and regularly used and known to many people;
- Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark;
- Signs describing the legal status and business sector of business entities;
- Signs indicating the geographical origin of goods or services, except where such sign has been widely used and recognized as a mark or registered as a collective mark or certification mark as stipulated in this Law;
- Signs other than integrated marks which are identical with or confusingly similar to registered marks of identical or similar goods or services on the basis of applications for registration with earlier filing dates or priority dates, as applicable, including applications for registration of marks filed pursuant to a treaty of which the Socialist Republic of Vietnam is a member;
- Signs identical with or confusingly similar to another person’s mark which has been widely used and recognized for similar or identical goods or services before the filing date or the priority date, as applicable;
- Signs identical with or confusingly similar to another person’s mark which has been registered for identical or similar goods or services, the registration certificate of which has been invalidated for no more than five years, except where the ground for such invalidation was non-use of the mark pursuant to sub-clause (d) of article 95.1 of this Law;
- Signs identical with or confusingly similar to another person’s mark recognized as a well known mark which has been registered for goods or services which are identical with or similar to those bearing such well known mark, or for dissimilar goods or services if the use of such mark may affect the distinctiveness of the well known mark or the mark registration was aimed at taking advantage of the reputation of the well known mark;
- Signs identical with or similar to another person’s trade name currently in use if the use of such sign may cause confusion to consumers as to the origin of goods or services;
- Signs identical with or similar to a protected geographical indication if the use of such sign may mislead consumers as to the geographical origin of goods;
- Signs identical with, containing or being translated or transcribed from protected geographical indications for wines or spirits if such sign has been registered for use with respect to wines and spirits not originating from the geographical areas bearing such geographical indications;
- Signs identical with or insignificantly different from another person’s industrial design which has been protected on the basis of an application for registration of an industrial design with a filing date or priority date earlier than that of the application for registration of the mark.
- A Power of Attorney (PoA) in favour of a Patent and Trademark agent registered before NOIP (e.g. Bross & Partners) simply signed by a person with legal authority to bind a juristic applicant. Neither notarization nor legalization is required. A faxed or scanned copy of PoA is accepted at the filing but the original shall be filed within 10 days from the filing date at no cost.
- Substantiated documents in support of the response/appeal.
- Other evidence and/or other relevant information (where applicable)
A pre-appeal/pre-response advice by a local qualified trademark agent is highly recommended to help you anticipate how much difficulty, chance of success and cost are before you decide to prosecute the rejected mark in Vietnam. As usual, Bross & Partners has been providing clients all around the world with its preliminary advice on the highly-reliable and swift manner on the free-of-charge basis.